Companies spend lots of money these days on their website design. For many businesses, their website is their only portal to obtain new clients; for others, its a large part of their marketing strategy; and for the rest its at least their company’s main presence on the web. So its perfectly understandable that a business would expect that their design could not be copied by a competitor. At the very least, the guy they hired to design the site shouldn’t be able to sell a similar design to the competitor right? Wrong. At least that’s what Judge Seybert of NY’s Eastern District Federal Court ruled in the case of Parker Waichman v. Gilman Law Firm
The plaintiff is a large personal injury law firm that owns hundreds of websites. It’s main site, however, is called Yourlawyer.com and PW paid defendant Robert Laraia for five years to assist in programming and designing the site. YOURLAWYER.COM, which is comprised of over 50,000 pages of information for potential clients, launched in 2000 and has been registered with the United States Patent and Trademark Office since 2007. PW takes its web presence seriously, devoting ten employees exclusively to management of the site. Imagine their surprise when they found out that Laraia then designed a website for The Gilman Law Firm, also a personal injury law firm, that copied many of the design elements of the PW site.
They filed suit in the Eastern District claiming trade dress infringement and breach of the confidentiality clause contained in Laraia’s employment contract with PW. Plaintiff’s complaint asserted that Gilman’s website “copied” certain features of Yourlawyer.com, “includ[ing], but…not limited to”:
A. A blue header bar listing topics in white type relating to personal injury and mass torts, separated by white vertical bars….
B. Directly above (A) on the left is the firm name, logo, and the descriptive line, “A National Law Firm.”
C. Directly below (A) is an element of scrolling images and news headlines with back, pause and forward buttons.
D. Directly below (C) is a shaded box containing links to current drugs, products and legal issues, with just headers and no additional description.
E. A blue footer bar of approximately ten lines repeating the element (B).
F. A brightly colored side banner form allowing visitors to input: (i) their personal information; (ii) the date of their incident; (iii) the name of the drug, device or accident description; and (iv) a description of their case, with a larger white text heading that states:
“FREE CASE REVIEW NO COST NO OBLIGATION”
G. A blue, floating side banner, addressed to visitors with a question, which states in white type “FREE CASE REVIEW” and clicks through to a page with a case submission form.
H. Topic pages that click through from (A) and list subtopic pages on numerous liability issues.
Gilman decide to settle (though when I checked I did see that many of those elements remain on their site in some fashion so they must have carved out an agreement with respect to those elements). Laraia, however, moved to dismiss and the court granted the motion. Simply stated the court said that the elements described by PW as being distinctive were not enough to constitute valid trade dress so as to cause confusion among consumers or so as to become “synonymous” with plaintiff’s firm.
To state a valid claim for trade dress infringement, a plaintiff must allege that: (1) the trade dress is distinctive in that it identifies the source of the product; (2) there is a likelihood of confusion between the parties’ goods; and (3) the trade dress is not functional — i.e., “essential to the use or purpose of the article” or “affect[ing] the cost or quality of the article.” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115-16 (2d Cir. 2001). The court said PW missed out on all three and that merely listing trade dress elements as it did was not sufficient to “synthesize” how these elements acquired distinctiveness or identity to the PW product. It sent the other claims against Laraia and his counterclaims against PW to State court.
A few courts have recognized that a company’s website can constitute protectable trade dress, but it must be distinctive and synonymous with the company’s product. That is a high hurdle to set and certainly small to mid-size businesses will be hard pressed to say that their consumers would be confused by a similar looking website if there are sufficiently different elements to the competing site, like the name and color for instance. Even the claim against the designer for breach of a confidentiality agreement may not bring much relief to a website owner. Depending on what the agreement says, unprotectable trade dress elements may not be “confidential” or a “business secret.” And good luck collecting money from the web designer even if you win. Also, even if you win, your competitor’s site will remain up and running.
The best advice I can give to a business trying to determine how to make its site distinctive is to manage your expectations. Spend your time and effort on coming up with a creative name, logo or system that makes your site distinctive in those areas, which are easier to protect. The “look and feel” argument will not be received well by courts unless you can show the three elements listed above. If a large successful law firm that spent all this time and money on its web presence couldn’t figure out how to do that, it may be impossible any business to overcome that hurdle.